Complainant is International Business Machines Corporation of Armonk, New York, United States of America (“United States”), represented internally.
Respondent is Nick Lipidarov, Advance-tech Inc. of Port Richey, Florida, United States. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2016. On March 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 16, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was April 5, 2016. The Response was filed late with the Center on April 6, 2016, without the certification required by paragraph 5(c)(viii) of the Rules.
The Center appointed Michael A. Albert as the sole panelist in this matter on April 18, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant began to offer products under the “IBM” name in 1924. Since 1952, Complainant has used the “IBM” name in association with the supply of computers and computer hardware, software, accessories, and related services to clients operating in a variety of fields, including the healthcare sector. Complainant holds trademark registrations for “IBM” in 170 countries, including the following trademarks in the United States:
- United States trademark Registration No. 4,181,289, registered on July 31, 2012
- United States trademark Registration No. 3,002,164, registered on September 27, 2005
- United States trademark Registration No. 2,183,815, registered on August 25, 1998
- United States trademark Registration No. 1,696,454, registered on June 23, 1992
- United States trademark Registration No. 1,694,814, registered on June 16, 1992
- United States trademark Registration No. 1,243,930, registered on June 28, 1983
- United States trademark Registration No. 1,205,090, registered on August 17, 1982
- United States trademark Registration No. 1,058,803, registered on February 15, 1977
- United States trademark Registration No. 640,606, registered on January 29, 1957
Each United States trademark was registered prior to Respondent’s registration of the Disputed Domain Name.
On October 21, 2015, Respondent registered the Disputed Domain Name. As of January 7, 2016, the Disputed Domain Name resolved to a website containing information related to telemedicine services.
Complainant submitted a cease-and-desist letter to Respondent on January 7, 2016, demanding that Respondent disable the Disputed Domain Name and transfer it to Complainant. Respondent stated that it had used the Disputed Domain Name “to gain the attention of” Complainant so that Respondent could offer telemedicine services “for, or with” Complainant. Complainant indicated that it had no interest in doing business with Respondent, at which point Respondent refused to transfer the Disputed Domain Name to Complainant. 5. Parties’ Contentions A. Complainant
Complainant alleges that the Disputed Domain Name is identical and confusingly similar to Complainant’s marks; that Respondent has no rights or legitimate interests in the Disputed Domain Name; and that Respondent registered and used the Disputed Domain Name in bad faith. On these grounds, Complainant requests that the Disputed Domain Name be transferred to Complainant.
In particular, Complainant alleges that the Disputed Domain Name consists merely of Complainant’s “IBM” mark, the generic word “healthcare,” and the generic Top-Level Domain (“gTLD”) “.com”. Complainant alleges that Respondent has not been licensed, contracted, or otherwise permitted by Complainant to use the “IBM” marks or to apply for any domain name incorporating the “IBM” marks, and that Complainant never acquiesced in any way to such use or application of the marks. Complainant also contends that Respondent never used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with any bona fide offering of goods or services; that Respondent has not been commonly known by the Disputed Domain Name; and that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Further, Complainant argues that, as a result of the high quality of goods and services Complainant has provided to its customers for over 100 years, and its reputation as one of the premier manufacturers of computer and computer-related goods and services throughout the world, Complainant’s name and the “IBM” trademarks are “famous and valuable assets.” Accordingly, Complainant alleges that Respondent was well aware of Complainant’s trademarks at the time Respondent registered the Disputed Domain Name.
Complainant alleges that Respondent registered the Disputed Domain Name both in order to prevent Complainant from reflecting the mark in a corresponding domain name, and to intentionally attract, for commercial gain, Internet users to the Disputed Domain Name by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name or of Respondent’s telemedicine services. B. Respondent
In accordance with the Panel’s ruling infra, the Response was not considered. 6. Discussion and Findings
The Untimely and Uncertified Response
The Panel will not consider the late-filed Response. The Response was filed on April 6, 2016, after the April 5 deadline established by the Rules. See Rules paragraph 5(a) (“Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider.”). Where, as here, Respondent submits an untimely Response, its admissibility is “solely within the discretion of the Panel.” Museum of Science v. Jason Dare,WIPO Case No. D2004-0614 (declining to consider late-filed Response); see also Rules paragraph 14(a) (“In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.”). In this case, even with the possibility of requesting an automatic four-day extension, as Respondent failed to provide any justification for the failure to submit a timely Response, the Response is inadmissible. See also Rules, paragraph 10(a), (d).
Even had the Response been timely filed, it would nevertheless be inadmissible due to its numerous procedural deficiencies. In clear violation of the Rules, the Response failed to: “[p]rovide the name, postal and e-mail addresses, and the telephone and telefax numbers of the Respondent (domain-name holder) and of any representative authorized to act for the Respondent in the administrative proceeding,” Rules paragraph 5(c)(ii); “[s]pecify a preferred method for communications directed to the Respondent in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy (where applicable),” Rules paragraph 5(c)(iii); “state whether Respondent elects instead to have the dispute decided by a three-member panel,” Rules paragraph 5(c)(iv); or “[s]tate that a copy of the response including any annexes has been sent or transmitted to the Complainant,” Rules paragraph 5(c)(vii). Most importantly, the Response did not include the certification required by the Rules:
Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.
Rules paragraph 5(c)(viii). These procedural requirements “are not empty formalities; on the contrary they are there in order to ensure a fair and transparent proceeding.” Dynamic Cassette International Ltd. v. Kombud,WIPO Case No. D2002-0262. Lacking any certification, and in clear disregard of the procedural elements required by the Rules, the Response is inadmissible. See Crédit Industriel et Commercial S.A v. Yu Ming,WIPO Case No. D2005-0458 (declining to consider uncertified Response); America Online, Inc. v. Quik-E Inc.,WIPO Case No. D2001-1141 (declining to consider uncertified and untimely Response: “[I]t is imperative that the certification requirements be met for the content of Katsis’ email to be considered as a Response.”); Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (declining to consider uncertified and untimely Response).
The Merits of the Complaint
The Panel finds that Complainant has satisfied all of the elements required by the Policy. The Disputed Domain Name is identical or confusingly similar to Complainant’s marks, Respondent has no rights or legitimate interests in the Disputed Domain Name, and Respondent registered and used the Disputed Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has established that it has rights in the “IBM” marks. Policy paragraph 4(a)(i). Panels have consistently held that a Complainant’s trademark registrations with the United States Patent and Trademark Office (“USPTO”) are sufficient to demonstrate such rights. See, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503 (Complainant has rights in marks registered with USPTO). Here, Complainant’s federal trademark registrations establish rights in the “IBM” marks pursuant to paragraph 4(a)(i) of the Policy.
In addition, the Disputed Domain Name is confusingly similar to Complainant’s marks. Policy paragraph 4(a)(i). The Disputed Domain Name consists of Complainant’s “IBM” mark, the generic word “healthcare,” and the gTLD “.com”. The distinctive aspect of the Disputed Domain Name is the “IBM” mark. It is well-established that the addition of a common descriptive word to a distinctive mark does not diminish the risk of confusion. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (“Neither the addition of an ordinary descriptive word (either as prefix or suffix) nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY, instantly recognizable as one of the most famous trademarks in the world.”). It is also uncontroversial that a gTLD is generally irrelevant under paragraph 4(a)(i) of the Policy. See, e.g., Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 (finding that a gTLD, such as “.net” or “.com”, does not affect the determination of whether the domain name is identical or confusingly similar). Accordingly, the Disputed Domain Name is confusingly similar to Complainant’s marks. B. Rights or Legitimate Interests
Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name. Policy paragraph 4(a)(ii).
Respondent has no connection or affiliation with Complainant and has not been licensed or otherwise permitted by Complainant to use the “IBM” marks or to apply for any domain name incorporating the marks.
There is no evidence that before any notice to Respondent of the dispute, Respondent used or made demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Policy paragraph 4(c)(i). In fact, screenshots of the Disputed Domain Name taken on January 7, 2016 show information related to telemedicine services offered by MedCallAssist. An offering of services is not bona fide “where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.” Drexel University v. David Brouda,WIPO Case No. D2001-0067 (finding no rights or legitimate interests). In this case, Respondent was aware of Complainant’s well-known trademarks at the time Respondent registered the Disputed Domain Name on October 21, 2015, and acknowledged to Complainant that the Disputed Domain Name was acquired because of its connection with Complainant. See Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian,WIPO Case No. D2001-0879 (finding no legitimate rights or interests where Respondent “was well aware his website evoked to the public the Complainant’s world famous” trademark). Respondent’s selection of the Disputed Domain Name was a result of Respondent’s self-acknowledged effort to create an association between Complainant and Respondent’s services. Under these circumstances, Respondent has not used the Disputed Domain Name in connection with a bona fide offering of services.
There is also no evidence that Respondent has been commonly known by the Disputed Domain Name. Policy paragraph 4(c)(ii). In fact, Respondent admitted in its communications to Complainant that the Disputed Domain Name was acquired “to gain the attention of IBM”, rather than to reflect an already-existing company name. This is textbook bad faith.
Furthermore, there is no evidence that Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Policy paragraph 4(c)(iii). Clearly, Respondent’s use of the Disputed Domain Name has been for commercial gain. Respondent placed information regarding telemedicine services on the Disputed Domain Name, and communicated to Complainant that Respondent “would like the opportunity to provide a quote” to Complainant for telemedicine services.
Accordingly, Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Complainant has established that Respondent registered and used the Disputed Domain Name in bad faith. Policy paragraph 4(a)(iii).
First, Complainant established that Respondent registered the Disputed Domain Name in order to prevent Complainant from reflecting the mark in a corresponding domain name. Policy paragraph 4(b)(ii). The evidence indicates that Respondent used its ownership of the Disputed Domain Name as leverage in negotiations with Complainant, in an attempt to convince Complainant to enter into business with Respondent. When Complainant rejected Respondent’s offer, Respondent refused to transfer the mark to Complainant. See Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications,WIPO Case No. D2003-0602(“A mere intention to obstruct when the domain names are registered is sufficient to clear the first hurdle of Paragraph 4(b)(ii).”).
Indeed, “Complainant has adduced evidence indicating the Respondent owns numerous domain names which correspond with well-known third party trademarks.” Inter-IKEA Systems B.V v. Technology Education Center,WIPO Case No. D2000-0522 (finding bad faith). Many of these domain names—including , , and —contain well-known trademarks followed by the generic word “healthcare”. This evidence demonstrates that Respondent has engaged in a pattern of registering domain names in order to prevent the owner of the trademarks or service marks from reflecting the marks in corresponding domain names. Respondent therefore has engaged in bad faith under paragraph 4(b)(ii) of the Policy.
Second, Complainant established that Respondent registered and used the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Disputed Domain name, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name and of the services offered on the Disputed Domain Name. Policy paragraph 4(b)(iv). As early as January 7, 2016, Respondent used the Disputed Domain Name to advertise for telemedicine services. The use of the “IBM” marks and the word “healthcare” in connection with the telemedicine services created a likelihood that consumers would believe there to be some association between Respondent’s services and Complainant’s healthcare-related products and services. This is especially likely given the ubiquity of Complainant’s marks. Respondent was aware of Complainant’s marks at the time Respondent registered the Disputed Domain Name, and therefore must have known of the likelihood of confusion. Accordingly, the Panel concludes that Respondent registered and used the Disputed Domain Name in bad faith under paragraph 4(b)(iv) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.
Michael A. Albert
Sole Panelist
Date: May 2, 2016
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